Court of Justice of European Union finds that reproduction of an infringing trade mark by a third party website operator of its own initiative and on its own behalf does not amount to infringement by the initial infringer

HomeInsightsCourt of Justice of European Union finds that reproduction of an infringing trade mark by a third party website operator of its own initiative and on its own behalf does not amount to infringement by the initial infringer

Article by

The German law firm, MBK Rechtsanwälte GbR, is the proprietor of a German trade mark for MBK RECHTSANWÄLTE for legal services. The claimant, mk advokaten GbR, is also a German law firm. It used to be called mbk rechtsanwälte and the corresponding name in Dutch, mbk advokaten, but following infringement proceedings brought by MBK Rechtsanwälte, the German court had banned mk advokaten from using, in the course of trade, the group of letters “mbk” for legal services.

MBK Rechtsanwälte discovered that a Google search for “mbk Rechtsanwälte” resulted in a list of various company websites, including the website www.kleve-niederrhein-stadtbranchenbuch.com, which displayed an advertisement for the legal services of mk advokaten.

MBK Rechtsanwälte said that this was a breach of the German court order. In its defence, mk advokaten said that as far as internet ads were concerned, the only thing it had done was to register itself in the online directory Das Örtliche and that, following the court order, it had withdrawn the directory record. It argued that it was not under any further obligation, as it had never requested inclusion on other websites.

At first instance, the German court agreed with MBK Rechtsanwälte and imposed a fine on mk advokaten in accordance with the court order. mk advokaten appealed the decision and the Higher Regional Court in Düsseldorf asked the CJEU whether, when a third party is referenced on a website by a sign that is identical to a registered trade mark, that third party is “using” the mark within the meaning of Article 5(1) of the Trade Marks Directive (2008/95/EC) if the entry was not placed there by the third party itself, but was reproduced by the website’s operator from another entry that the third party had placed in infringement of the trade mark.

The CJEU referred to Case C-323/09 Interflora EU:C:2011:604, which states that use of a sign that is identical with or similar to another person’s trade mark will constitute “use” where that sign, selected by an advertiser as a keyword in an online referencing service, is the means used by the advertiser to trigger the display of its advertisement, even where that sign does not appear in the advertisement itself. Therefore, where a person operating in the course of trade orders, from the operator of a referencing website, the publication of an advertisement the display of which contains or is triggered by a sign identical or similar sign to another person’s trade mark, that person must be considered to be using that sign, within the meaning of Article 5(1).

However, the CJEU noted, that person cannot be held liable under Article 5(1) for the independent actions of other economic operators, such as those of referencing website operators with whom that person has no direct or indirect dealings and who do not act by order and on behalf of that person, but on their own initiative and in their own name.

The CJEU held that the term “using” in Article 5(1) involves active conduct and direct or indirect control of the act constituting the use.

The CJEU said that it is for the referring court to examine whether, from the conduct of mk advokaten, in the context of either a direct or indirect relationship between mk advokaten and the operators of the websites in question, that those operators had placed the advertisement online by order and on behalf of mk advokaten. In the absence of such conduct, MBK Rechtsanwälte was not justified in taking action against mk advokaten under Article 5(1) on the ground that the ad was published online on websites other than the Das Örtliche directory.

However, the CJEU said, this does not change the fact that MBK Rechtsanwälte can claim, if appropriate, restitution from mk advokaten for financial benefits on the basis of national law. It can also take action against the operators of the websites in question.

Finally, the CJEU said that, in the circumstances of this request for a preliminary ruling, the fact that trade mark was taken from an infringing entry in Das Örtliche was irrelevant, as the only question the CJEU had to consider was whether mk advokaten had used the trade mark when the ad on the third party website was placed.

In conclusion, the CJEU said that Article 5(1) should be interpreted as meaning that a person operating in the course of trade that has arranged for an advertisement which infringes another person’s trade mark to be placed on a website is not using a sign which is identical with that trade mark where the operators of other websites reproduce that advertisement by placing it online, on their own initiative and in their own name, on other websites. (Case C-684/19 mk advokaten v MBK Rechtsanwälte GbR EU:C:2020:519 (2 July 2020) — to read the judgment in full, click here).